Notice from the European Patent Office dated 11 November 2022 concerning the forthcoming introduction of the Unitary Patent and the possibility of requesting a delay in issuing the decision to grant a European patent in response to a communication under Rule 71(3) EPC

This text is intended for publication in the Official Journal (OJ) of the EPO. It is made available in advance on the EPO website merely as a courtesy to the public. Only the text subsequently published in the officially certified PDF file of the OJ is authentic. It cannot be guaranteed that this advance version accurately replicates that text.

Regulations (EU) No 1257/2012 and (EU) No 1260/2012[ 1 ] setting up the Unitary Patent will apply from the date of entry into force of the Agreement on a Unified Patent Court (UPCA).[ 2 ] By decision dated 11 November 2022,[ 3 ] the President of the European Patent Office (EPO) has given European patent applicants the possibility to request that the issuance of the decision to grant a European patent be delayed so that the mention of the grant is published in the European Patent Bulletin on or immediately after the date of entry into force of the UPCA (i.e. on or after the date of application of the above-mentioned EU Regulations) in order to allow the registration of unitary effect for that European patent.

This decision will enter into force on 1 January 2023 and will apply to all pending European patent applications. It will cease to have effect on the date of entry into force of the UPCA, i.e. on the date of application of the above-mentioned EU Regulations.

This notice repeals the notice from the EPO dated 22 December 2021 concerning the forthcoming introduction of the Unitary Patent and the possibility of requesting a delay in issuing the decision to grant a European patent in response to a communication under Rule 71(3) EPC (OJ EPO 2022, A5) as of its date of publication in the Official Journal of the EPO. It provides information on the exercise of this temporary possibility to request a delay of grant in view of the forthcoming introduction of the Unitary Patent, and on its practical implications. Please note that the present notice merely reflects the adjustment of the start date made to the above-referred decision of the President of the EPO and that no other changes were made.

A. Form of the request for delay

The request for delay must be filed on FORM 2025 provided by the EPO. Otherwise, it will be deemed not to have been filed. FORM 2025 should preferably be filed online.

B. Admissibility of the request for delay

A request for delaying the issuance of the decision to grant a European patent may be validly filed only for European patent applications in respect of which the applicant has been informed of the text intended for grant by a communication under Rule 71(3) EPC but has not yet approved that text.[ 4 ] Any request that does not meet these requirements will be deemed not to have been filed.

This means that applicants can file a request for delay, as long as they have not yet approved a text for grant communicated to them under Rule 71(3) EPC. A request for delay filed on the same day as the approval of the text intended for grant will be considered to have been validly filed. Applicants requesting reasoned amendments or corrections under Rule 71(6) EPC in response to a communication under Rule 71(3) EPC may at the same time file a request for a delay of grant. Any such request filed after receipt of their approval of the text for grant will be deemed not to have been filed.

A request for delay has no effect on the four-month period for replying to the communication under Rule 71(3) EPC. Applicants must therefore still file a reply to this communication within the applicable time limits. Otherwise, the European patent application will be deemed to be withdrawn under Rule 71(7) EPC, even if a delay of grant has been validly requested.

In the case of a subsequent communication under Rule 71(3) EPC, a request validly filed in respect of an earlier communication under Rule 71(3) EPC will remain effective.

The examining division may resume examination at any time during the period the decision to grant is delayed, e.g. if third party observations so require.

Please note that a request for delay can only be filed as from the date of entry into force of the above-mentioned decision of the President, i.e. as from 1 January 2023. Any request filed before that date will be deemed not to have been filed.

A request for delay can be withdrawn at any time.

C. Obtaining a Unitary Patent: separate request for unitary effect

In order to obtain a Unitary Patent, a separate request for unitary effect must be filed with the EPO. Detailed information on how to obtain a Unitary Patent can be found in the Unitary Patent Guide available on the EPO website.

A validly filed request for delay will ensure that the European patent is granted on or after the date of application of Regulation (EU) No 1257/2012. The granted European patent will then be eligible for registration as a Unitary Patent.

In order to facilitate the introduction of the Unitary Patent system, the EPO will also allow the filing of requests for unitary effect already as of 1 January 2023. Such early requests for unitary effect may only be filed for European patent applications in respect of which a communication under Rule 71(3) EPC has been despatched. For further information please see the Notice from the European Patent Office dated 11 November 2022 concerning the forthcoming introduction of the Unitary Patent and the possibility to file early requests for unitary effect.

 

[ 1 ] See OJ EPO 2013, 111 and 132.

[ 2 ] See OJ EPO 2013, 287.

[ 3 ] Decision of the President of the European Patent Office dated 11 November 2022 concerning the forthcoming introduction of the Unitary Patent and the possibility of requesting a delay in issuing the decision to grant a European patent in response to a communication under Rule 71(3) EPC.

[ 4 ] It is to be noted that the date of despatch of the communication under Rule 71(3) EPC is the relevant date here, not the date of notification of that communication.

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